DCT
4:18-cv-04020
Shur Co LLC v. Timpte Industries Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SHUR-CO, LLC (South Dakota)
- Defendant: Timpte Industries, Inc. (Delaware) and Thunderstone Mfg, LLC (Colorado)
- Plaintiff’s Counsel: Woods, Fuller, Shultz & Smith P.C.
- Case Identification: 4:18-cv-04020, D.S.D., 02/14/2018
- Venue Allegations: Venue is asserted based on Defendants' alleged acts of infringement within the district and the presence of a "regular and established place of business" (Timpte of Sioux Falls) in South Dakota.
- Core Dispute: Plaintiff alleges that Defendants’ wireless remote-controlled tarp systems for grain trailers infringe a patent related to wireless controllers for multiple vehicle accessories.
- Technical Context: The technology involves centralized wireless remote controls for operating multiple powered accessories on large trucks and trailers, such as tarp systems and hopper doors.
- Key Procedural History: Plaintiff alleges it sent a cease and desist letter to Defendants on January 11, 2018, providing a copy of the patent-in-suit. The complaint states that Defendants responded on January 25, 2018, acknowledging "obvious similarities" but refusing to cease the allegedly infringing activity. This pre-suit notice forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2010-02-22 | '797 Patent Priority Date |
| 2017-12-19 | '797 Patent Issue Date |
| 2018-01-11 | Plaintiff sends Cease and Desist Letter to Defendants |
| 2018-01-25 | Defendants respond to Cease and Desist Letter |
| 2018-02-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,847,797 - "Wireless Controllers"
- Patent Identification: U.S. Patent No. 9,847,797, "Wireless Controllers," issued December 19, 2017 (the “’797 Patent”).
The Invention Explained
- Problem Addressed: The patent's background describes the risk of operators of large vehicles (like trucks or grain carts) inadvertently activating the wrong powered accessory from a multi-function controller, which could lead to hazardous situations such as unintentionally discharging cargo onto a road (’797 Patent, col. 3:3-16).
- The Patented Solution: The invention is a wireless controller for multiple vehicle accessories featuring a protective cover that, when closed, "substantially cover[s]" the activation buttons to prevent accidental use (’797 Patent, col. 3:32-42; Abstract). The controller is designed to use a "single component selection mechanism," such as a single button, to toggle between the different accessories it can operate, simplifying the user interface (’797 Patent, col. 4:57-64).
- Technical Importance: This design seeks to improve the safety and reliability of operating complex, multi-function vehicles by reducing the chance of erroneous commands and protecting the controller itself from damage.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2 (Compl. ¶20).
- Independent Claim 1 (Product Transportation System):
- A vehicle with at least two electrically operable accessories, one being a "rolling tarp system."
- A wireless controller with a "cover portion" and a "base portion."
- A "visually-perceptible listing of identifiers" for the accessories.
- A "single component selection mechanism" (e.g., a depressible button) that "toggles" to select an accessory.
- An "activated component indicator" to show which accessory is selected.
- A "component activation mechanism" to transmit a signal to the selected accessory.
- A configuration where the activation mechanism is "substantially covered" when the controller is in a closed position.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the "Thunder 6000 Power Tarp XR" system sold with a wireless remote, grain trailers sold equipped with the Thunder 6000 system, and "One Touch" conversion kits sold with a wireless remote (Compl. ¶15, 20).
Functionality and Market Context
- The complaint describes the accused products as competing tarp systems for grain trailers that include a wireless remote control (Compl. ¶6, 15).
- Plaintiff alleges these products are sold both as integrated components on new trailers and as separate systems or kits for installation on existing trailers (Compl. ¶15, 20).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'797 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a vehicle capable of having at least two electrically operable accessories associated therewith... a first said electrically operable accessory comprising a rolling tarp system... | The "grain trailers" sold by Defendants, which are equipped with the "Thunder 6000" tarp system and can be equipped with other accessories. | ¶15, 20 | col. 11:40-48 |
| a wireless controller configured to control at least two electrically operable accessories... | The "wireless remote" sold with the Thunder 6000 and One Touch conversion kits. | ¶15 | col. 11:49-53 |
| a cover portion; a base portion operably attached to the cover portion; | The complaint does not provide specific details, but alleges the "wireless remote" infringes, which implies it possesses these structural elements. | ¶15, 20 | col. 11:54-55 |
| a visually-perceptible listing of identifiers for each of the at least two electrically operable accessories... | The complaint does not provide specific details on the accused remote's interface. | ¶15, 20 | col. 11:57-61 |
| a single component selection mechanism comprising a depressible button... capable of selecting one of the electrically operable accessories... | The complaint does not describe the button configuration of the accused remote. | ¶15, 20 | col. 11:62-67 |
| a component activation mechanism mounted to at least one of the cover portion and the base portion... | The complaint does not provide specific details on the accused remote's activation buttons. | ¶15, 20 | col. 12:4-8 |
| wherein when the cover portion and the base portion are positioned in a closed configuration, the component activation mechanism is substantially covered... | The complaint does not describe a protective cover or closed configuration for the accused remote. | ¶15, 20 | col. 12:16-25 |
| wherein the component selection mechanism is configured such that depression of the depressible button... toggles the selected one of the electrically operable accessories... | The complaint does not describe the selection logic of the accused remote. | ¶15, 20 | col. 12:26-36 |
Identified Points of Contention
- Scope Questions: A central question will be the construction of "substantially covered." The patent defines this term quantitatively as "more than 50% of the surface area of the buttons and displays are covered" (’797 Patent, col. 3:36-38). The infringement analysis may turn on whether the accused remote’s design meets this threshold.
- Technical Questions: The complaint does not provide any evidence that the accused "wireless remote" actually contains a "single component selection mechanism" that "toggles" between accessories as required by the claim. A key factual question will be whether the accused remote uses this specific architecture or an alternative one, such as dedicated buttons for each accessory, which may not infringe the asserted claims.
V. Key Claim Terms for Construction
The Term: "substantially covered"
Context and Importance: This term is critical to the inventive concept of protecting against inadvertent activation. Whether the accused remote infringes will depend on whether its design, particularly if it includes a cover, meets the definition of "substantially covered."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides an explicit, quantitative definition: "As used herein, the term substantially covered means that more than 50% of the surface area of the buttons and displays are covered" (’797 Patent, col. 3:35-38). This language may support a broad application to any design meeting the 50% threshold.
- Evidence for a Narrower Interpretation: The specification also provides a narrower example, stating that "In other configurations, more than 80% of the surface area of the buttons and displays are covered" (’797 Patent, col. 3:38-40). Additionally, the embodiment shown in Figure 1 depicts a clamshell design where the buttons are nearly 100% covered. A party may argue the term should be construed more narrowly in light of these passages and figures.
The Term: "a single component selection mechanism comprising a depressible button"
Context and Importance: Both asserted independent claims require this "single" button for toggling between accessories. Practitioners may focus on this term because if the accused remote uses multiple, distinct buttons to select different accessories, it may fall outside the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of this element. A party might argue that "mechanism" is the key word, and that a rocker switch or a pair of up/down arrows could constitute a "single mechanism" for selection, even if not a single physical button.
- Evidence for a Narrower Interpretation: The plain language "a depressible button" suggests a singular, physical button. The specification reinforces this by describing a configuration where "the component selection mechanism 40 is a button" and that "each time the button is pressed, a different accessory... is activated" (’797 Patent, col. 4:6-8). This may support an interpretation limited to a single physical button for toggling.
VI. Other Allegations
Indirect Infringement
The complaint does not contain a formal count for indirect infringement. However, it alleges the sale of the "Thunder 6000 systems sold as separate products" and "One Touch conversion kits" (Compl. ¶20), which could form the factual basis for a future claim of induced or contributory infringement against Defendants for providing components to end-users.
Willful Infringement
The complaint alleges willful infringement based on Defendants’ continued sale of the accused products after receiving a cease and desist letter on January 11, 2018, which provided actual notice of the ’797 Patent (Compl. ¶16, 22-23). The allegation is further supported by the claim that Defendants acknowledged "obvious similarities" between the patented claims and the accused products but refused to stop their allegedly infringing activities (Compl. ¶17-18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of factual correspondence: does the accused wireless remote, about which the complaint provides minimal technical detail, actually employ the specific architecture recited in the claims? The case may depend on whether the accused device uses a "single component selection mechanism" that "toggles" or a different, potentially non-infringing design.
- A key legal question will be one of definitional scope: how will the court construe the term "substantially covered"? The outcome will likely hinge on whether the patent's explicit quantitative definition (">50%") controls, or if the term is interpreted more narrowly based on the preferred embodiments showing near-total coverage.
- An important evidentiary question for damages will be one of willfulness: given the alleged pre-suit notice and Defendants' acknowledgement of "obvious similarities," can Defendants establish a good-faith belief of non-infringement to defeat the claim for enhanced damages?